To: | Ridgewood Home CleanOut Sevices LLC (ross@redriverlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88387342 - CLEANSLATE - CleanSlate |
Sent: | May 12, 2020 08:16:40 AM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88387342
Mark: CLEANSLATE
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Correspondence Address:
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Applicant: Ridgewood Home CleanOut Sevices LLC
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Reference/Docket No. CleanSlate
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 12, 2020
This Office action is in response to applicant’s communication filed on May 6, 2020.
The applicant must note and respond to the following information about the identification of services and continued refusal:
Entire Amendment Exceeds Scope of Services in Original Application
In this case, the application originally identified the services as follows: “Cleaning of buildings.”
However, the proposed amendment identifies the following services: “Restoration in the field of Building cleanout.”
This proposed amendment is beyond the scope of the original identification because the original identification clearly and unambiguously identifies applicant’s services as the “cleaning of buildings,” which involves the activity of making rooms in a building clean. Such services, however, are not so broad as to include “restoration” services, which refers to the process of repairing or renovating a building, work of art, vehicle, etc., so as to restore it to its original condition. See attached online dictionary definition of the wording “restoration” from the Lexico/Oxford Dictionary. The “repair” or “renovating” of a building does not fall within the limiting language or scope of the “cleaning” of a building. Therefore, the applicant’s proposed amended identification of services exceeds the scope of the identification in the application and is therefore unacceptable.
Section 2(d) Refusal – Likelihood of Confusion
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In its response, applicant argues that its mark and the cited mark are significantly different in sound, appearance, and commercial impression. The examining attorney disagrees. Both marks in this case contain the identical sounding and similar appearing wording CLEANSLATE. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, the applicant has merely deleted the wording BY CARA in the cited registered mark to create its own mark. The applicant’s applied-for mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, despite the differences, the marks in this case share the confusingly identical sounding, similar appearing, and dominant wording CLEANSLATE. When considered in their entireties, the marks both share a similar commercial impression because each mark suggests services that provide or establish a fresh start or the opportunity to begin anew.
In its response, applicant argues that its services differ from the registrant’s services because applicant’s services involve the removal and restoration of buildings whereas registrant’s services involve janitorial and washing services. Also the consumers served by applicant and registrant differ and channels of trade of the services differ. The examining attorney disagrees. For the reasons discussed above, the original identification in the application “cleaning of buildings” remains operative. The registrant’s services as stated include multiple services, including the “cleaning of building exterior surfaces” and “janitorial services.”
In this case, the application uses broad wording to describe “cleaning of buildings,” which presumably encompasses all services of the type described, including the registrant’s more narrow “cleaning of building exterior surfaces” and “janitorial services.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
In its response, applicant argues that sophisticated purchasers will be able to differentiate the applicant’s and registrant’s services. The examining attorney disagrees. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
In its response, the applicant states that there exists no known actual confusion. However, this argument is unpersuasive. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
This refusal is continued and maintained.
How to respond. Click to file a response to this nonfinal Office action.
/Andrew Rhim/
Examining Attorney
United States Patent & Trademark Office
Law Office 101
(571) 272-9711
andrew.rhim@uspto.gov
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